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| Apple store regent street - London |
The European Court of Justice
yesterday has confirmed that Apple has the right to trademark the layout its
flagship store design, giving other retailers the potential to do the same.
In 2013, two years after Apple
successfully registered the design of its stores with the United States patent
office, the company then sought to extend the trademark internationally, but the
patent and trademark office in Germany, the European Union's biggest market,
refused its application saying there was nothing unique to the store design and
that the request was groundless.
Apple appealed its case with a German
patent court which requested a binding opinion from the European Court of
Justice in Kirchberg, on whether a store design could be trademarked without
any indication of size or proportion.
In its response yesterday, the court confirmed
that the 3D layout of a store may “constitute a trade mark provided that it is
capable of distinguishing the goods or services of one undertaking from those
of other undertakings…where the depicted layout departs significantly from the
norm or customs of the economic sector concerned.”
The Luxembourg court added however
that the uniqueness of a design must be assessed on a case-by-case basis,
taking into account competing stores and the perception of the relevant public
(consisting of the average consumer of the category of goods or services in
question, who is reasonably well informed).
The Goss-IPgirl
while conducting PhD research on innovation, ideas and originality while
listening to a TED radio talk last week, on what is original? in conversation with Steven Johnson TED speaker, and author of ‘Where Good Ideas Come From,’ learned during the
discussion that Apple is the most successful retailers by sales per square foot, on the ‘planet.’ So she finds it’s no wonder
that they want to trademark their store. Interestingly in the radio discussion with
Johnson, he tells the story of when Apple was trying to come up with the design
and functioning of their retail stores:
“They
were like, what's does Apple know about doing stores? They're going to open
these stores in shopping malls and downtown areas, and this is going to be a
big flop. They don't know what they're doing with this. And the normal way you
would do this is you would look at their direct competitors in that field and
say, OK, you know, we're a consumer-electronics store so let's look at Best Buy
or RadioShack or something like that and see what they're doing and try to do
it a little bit better. But Apple wanted to be Apple and wanted to think
different and reinvent the whole process. And they were like, well, we want to
create a store that's so great that people would just, like, come and hang out
in it, you know, even if they don't want to buy anything, they just want to be
there. So, you know, what would be an environment that's like that where the
customer's really happy and really enjoys it?
And
so they decided to study high-end hotel chains. And so they sent a bunch of
employees into the Ritz-Carlton training program and had them, like, take this
program. And they came back and they said, OK, so what secret? And one of the
things that they came up with was that this, you know, the thing that people
love about a high-end hotel is they love the concierge. Like, you go to the
concierge and whatever you ask for, like, they're working on it and it's just
such a great thing. And so they said, well, what would be the equivalent of a
high-end hotel concierge in a computer store? What would that look like? And
that's how they came up with [it]."
This story has a
lot to say about patterns of innovation, something which the Goss-IPgirl has been
thinking about in abundance recently. In his book, Steven makes
the point that the most innovative, inventive people are always building on top of the
ideas of other people in either very subtle and not-so-subtle ways.
What the Goss-IPgirl
finds interesting here is how trademark law is being used to both protect and reflect
new forms of innovation in the market. Recently there has been a surge of
non-conventional trademarks that have become more widely accepted in recent
times
and in particular the Goss-IPgirl is seeing a modern form of
trademark law emerging that extends beyond just a logo and words and embraces a
more modern view on how trademarks function today. If only there was some way
to protect and prevent competitors from using the same 3D shape, or sound, or
smell associated with a brand or mark…
The Goss-IPgirl wonders with curiosity what impact this
case will have for both trademark law and retailers. Will we see a surge of
retailers rushing to trademark the layout of their store designs? Either way -
this case is extremely ground breaking – because it allows other retailers to
effectively trademark the retail layout of stores. Just to be clear, this doesn’t
mean however, that a company with a similar or the same store layout to Apple is
automatically infringing the Apple stores trademark, because essentially it
would need to be shown that there is confusion on the part of the public as per
similar good or services. But it does mean that a design representing the 3D layout
of a retail store is capable of being registered as a trademark. The Goss-IPgirl wonders what will be capable
of being registered next?
The matter must now go back to the German Court to
ultimately decide, the 31 paragraph Judgement for this case can be found here
and the CJEU press release can be accessed here
The Court of Milan’s
intellectual property division has found Bergamo-based textile company Fratelli
Martinelli Textile Srl guilty of creating and selling counterfeit merchandise
with a logo intentionally similar to that of the Polo/Lauren Company.
